Ex Parte Castle et al

Board of Patent Appeals and Interferences

Feb 10, 2011

11094759 (B.P.A.I. Feb. 10, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. CASTLE and FRASER J. DICKIN
____________________

Appeal 2009-008076
Application 11/094,7591
Technology Center 2600
____________________

Before ROBERT E. NAPPI, MARC S. HOFF,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Hewlett Packard Company.
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 7-10, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a smart Radio Frequency
Identification (RFID) tag that includes a memory having an operating
program, a current password, and data (Abstract). When a reader and the
RFID memory tag are sufficiently close, the reader sends a signal to the tag
to request the data stored in the memory of the RFID tag (Spec. 2:18–3:6;
7:9-13). In response to a reader signal, the operating program checks the
reader signal for inclusion of a current token dependent upon the current
password (Spec. 7:19-23). If the current token does not exist within the
reader signal, the RFID memory tag does not transmit stored data from the
memory to the reader (Spec. 7:19-23). If the current token is located within
the reader signal, the RFID memory tag transmits the stored data to the
reader and the password is changed. (Spec. 7:23-25; 8:9-19).
Claim 1 is exemplary:
1. A memory tag having a memory with stored therein data, an
operating program and a current password;
the memory tag being operable, in response to a reader signal received
from a reader, to run the operating program which is operable to check the
reader signal for inclusion of a current token dependent on the current
password, and,
a) if the current token is not identified within the reader signal, the
memory tag doing nothing, or
b) if the current token is identified within the reader signal, the
memory tag being operable to read the data in the memory and transmit it to
the reader, wherein the operating program is further operable to generate and
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update the password stored in the memory after each communication from
the memory tag to the reader.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Guski US 5,661,807 Aug. 26, 1997
Cremers US 5,742,236 Apr. 21, 1998
Fujioka US 5,896,325 Apr. 20, 1999
Haines GB 2 354 735 A Apr. 4, 2001
Claims 1, 7, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fujioka in view of Cremers.3
Claims 8, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujioka in view of Cremers and Guski.4
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujioka in view of Cremers and Haines.

ISSUE
Appellants contend that the references do not disclose a memory tag
having a memory that includes an operating program, “wherein the operating
program is further operable to generate and update [a] password stored in the
memory after each communication from the memory tag to the reader”
(App. Br. 4). Appellants assert that the Examiner has provided no proper
articulated reason to combine the references (App. Br. 5). Appellants assert
that, unlike the claimed invention, the integrated circuit card (IC card) of
Cremers does not generate a random password but, rather the read-write unit
25 (which corresponds to a reader) generates the random password (App. Br.
5). Accordingly, Appellants argue that the Examiner has provided no

3 Claim 5 was canceled by Appellants (App. Br. 8).
4 Claim 6 was canceled by Appellants (App. Br. 8).
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evidentiary basis for the assertion that it would have been obvious to have
the control element 26 of the IC card to generate the cryptographic code
instead of the read-write unit 25 (App. Br. 5). Appellants contend that since
the generation of the cryptographic code in Cremers must be at the read-
write unit 25, Cremers teaches away from an arrangement as suggested by
the Examiner (App. Br. 6).
Appellants’ contentions present us with the following dispositive
issue: Do the references disclose a memory tag comprising a memory,
having an operating program and a current password, “wherein the operating
program is further operable to generate and update the password stored in
the memory after each communication from the memory tag to the reader”?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Fujioka
1. Fujioka discloses an RF IC card 100 that communicates with a
data reading and writing device (reader/writer) 101, wherein the IC card 100
includes a non-volatile memory 105. A control circuit 108 within IC card
100 compares a password input from the reader/writer 101 with the
password previously stored in the non-volatile memory 105, when
reader/writer 101 accesses memory 105. If the passwords match, control
circuit 108 permits reader/writer 101 access to data stored in memory 105.
If, however, the passwords do not match, the control circuit 108 prohibits
access to memory 105. (Fig. 7; col. 1, ll. 53-64).
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Cremers
2. Cremers discloses an electronic code locking mechanism for the
deactivation of a motor drive interlock, wherein a key and the locking
mechanism transmit information between each other to intercept misuse
from an unauthorized person (Abstract). Ordinarily, control electronics 18
generates a release signal 19 upon successful access of the system by key 13
(Fig. 1; col. 3, ll. 35-40). In an effort to prevent unauthorized access,
however, a cryptographic encoder 38 generates a cryptographic code that
changes after each actuation of key 13 (Fig. 1; col. 5, ll. 22-38).
Transmission of a key code 34 (the combination of the currently valid key
number and the object-specific identification data 30 previously read in)
takes place using the cryptographic code (Fig. 1; col. 5, ll. 31-35). The
cryptographic code is transmitted and stored in the memories of the locking
mechanism 29 and external transponders 22, 27 of key 13 and control
element 26 (Fig. 1; col. 5, ll. 1-9, 35-38). Thus, since the code is changed
with each interchange of information through the read-write unit 25, an
unauthorized person that intercepts the code would not be able to access the
information (Fig. 1; col. 5, ll. 40-46).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.
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The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991).
Further, our reviewing court has held that “[a] reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also Para-
Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir.
1995).

ANALYSIS
Claims 1, 7, 10, and 16
We select claim 1 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 1 recites, inter alia, “wherein the operating
program is further operable to generate and update the password stored in
the memory after each communication from the memory tag to the reader.”
Independent claim 16 has a claim limitation similar in scope.
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We do not consider Appellants’ arguments to be persuasive to show
Examiner error. We agree with the Examiner’s finding that Fujioka
discloses a memory tag that checks the password of a reader’s signal and
only transmits data stored on the tag to the reader if the password is
indentified in the reader signal (Ans. 3-4).
Fujioka discloses an IC card 100, having a non-volatile memory 105,
that communicates with a data reading and writing device (reader/writer)
101 (FF 1). When the memory 105 is accessed by the reader/writer 101, a
control circuit 108 within the IC card 100 compares the password input from
the reader/writer 101 with the password previously stored in the non-volatile
memory 105 (FF 1). When the passwords match, the control circuit 108
permits access to the non-volatile memory 105 (FF 1). When the passwords
do not match, however, the control circuit 108 prohibits access to the non-
volatile memory 105 (FF 1).
Cremers discloses an electronic key system that includes a read/write
unit 25 having a cryptographic encoder 38 (FF 2). The cryptographic
encoder 38 generates a key code 34 that changes after each actuation of a
key 13 in order to prevent a person from unauthorized triggering of a release
signal 19 from the control electronics 18 (FF 2). The key code is stored in
all three memories corresponding to the lock memory 29 and respective
transponders, 22 and 27, of key 13 and control element card 26 (FF 2).
The Examiner relies upon Cremers to disclose an operating program
that generates and updates the password stored in the memory after each
communication from the memory tag to the reader (Ans. 4). Since the
cryptographic encoder 38 generates a new key code after each actuation of
the key and stores it in the lock memory 29 and respective transponders, 22
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and 27, we agree with the Examiner’s finding that Cremers discloses an
operating program that generates and updates the password stored in the
memory after each communication from the memory tag to the reader.
Accordingly, we agree with the Examiner’s finding that it would be
obvious to one of ordinary skill in the art at the time of invention to modify
Fujioka with the cryptographic encoder 37 of Cremers to generate and
update the password stored in the memory 105 of the IC card 100 and the
reader 101 after each communication between the IC card 100 and the reader
101 to design a temper proof system (Ans. 4).
Since the Examiner does not rely upon Cremers for the IC card, but
for the operating program stored in memory that generates and updates the
password after each successful access of the data stored in memory, we find
that whether the cryptographic code is generated in the key or the read/write
unit 25 of Cremers is not relevant (Ans. 4). We do not find that the
cryptographic code generation of Cremers discredits the teachings of Fujioka
since Fujioka discloses an IC card 100 having a memory 105 that stores a
password (FF 1). Changing the password after communication with a reader
101 does not discredit the teachings of Fujioka; rather, it enhances
information security. Therefore, we are not persuaded that a person of
ordinary skill would be discouraged from combining the teachings of
Fujioka and Cremers, since the updating of a new password would make the
communications between the reader 101 and IC card 100 more secure.
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Fujioka and Cremers
discloses a memory tag comprising a memory, having an operating program
and a current password, “wherein the operating program is further operable
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to generate and update the password stored in the memory after each
communication from the memory tag to the reader.” As a result, we will
sustain the Examiner’s § 103 rejection of representative claim 1 and that of
claims 7, 10, and 16.
Claims 8, 9, and 17
Appellants argue that claims 8, 9, and 17 are patentable over the cited
prior art because the claims depend from respective independent claims 1
and 16 and because Guski fails to cure the deficiencies of Fujioka and
Cremers (App. Br. 6).
As noted supra, however, we find that Fujioka and Cremers teach all
the features of parent claims 1 and 16. We, therefore, affirm the Examiner’s
rejection of claims 8, 9, and 17 under 35 U.S.C. § 103, for the same reasons
expressed with respect to parent claims 1 and 16, supra.
Claims 2 and 3
Appellants argue that claims 2 and 3 are patentable over the cited
prior art because the claims depend from independent claim 1 and because
Haines fails to cure the deficiencies of Fujioka and Cremers (App. Br. 6-7).
As noted supra, however, we find that Fujioka and Cremers teach all
the features of claim 1. We, therefore, affirm the Examiner’s rejection of
claims 2 and 3 under 35 U.S.C. § 103, for the same reasons expressed with
respect to parent claim 1, supra.

CONCLUSION
The references disclose a memory tag comprising a memory, having
an operating program and a current password, “wherein the operating
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program is further operable to generate and update the password stored in
the memory after each communication from the memory tag to the reader.”

ORDER
The Examiner’s rejection of claims 1-3, 7-10, 16, and 17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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